Case #22: Philippine Nut Industry, Inc. vs.

Standard Brands Incorporated

No. L-23035
July 31, 1975

Topic: Dominancy Test

Facts

Philippine Nut a domestic corporation, obtained from the Patent Office on August 10,
1961, Certificate of Registration No. SR-416 covering the trademark “PHILIPPINE
PLANTERS CORDIAL PEANUTS,” the label used on its product of salted peanuts.
On May 14, 1962, Standard Brands a foreign corporation, filed with the Director of
Patente Inter Partes Case No. 268 asking for the cancellation of Philippine Nut’s
certificate of registration on the ground that “the registrant was not entitled to register
the mark at the time of its application for registration thereof” for the reason that it
(Standard Brands) is the owner of the trademark “PLANTERS COCKTAIL PEANUTS”
covered by Certificate of Registration No. SR-172, issued by the Patent Office on July
28, 1958. Herein respondents contend that the petitioner’s trademark is confusingly
similar to its trademark, which is also used on salted peanuts.

The Director of Patents found and held that in the labels using the two trademarks in
question, the dominant part is the word “Planters”, displayed “in a very similar manner”
so much so that “as to appearance and general impression” there is “a very confusing
similarity,” and he concluded that Philippine Nut “was not entitled to register the mark at
the time of its filing the application for registration” as Standard Brands will be damaged
by the registration of the same. Its motion for reconsideration having been denied,
Philippine Nut came up to this Court for a review of said decision.

Issue(s)

Whether the dominancy test can sufficiently justify the cancellation of petitioner’s
certificate of registration

Ruling

Yes. In the cases involving infringement of trademark brought before the Court, it has
been consistently held that there is infringement of trademark when the use of the mark
involved would be likely to cause confusion or mistake in the mind of the public or to
deceive purchasers as to the origin or source of the commodity; that whether or not a
trademark causes confusion and is likely to deceive the public is a question of fact
which is to be resolved by applying the “test of dominancy”, meaning, if the competing
trademark contains the main or essential or dominant features of another by reason of
which confusion and deception are likely to result, then infringement takes place; that
duplication or imitation is not necessary, a similarity in the dominant features of the
trademarks would be sufficient.
According to petitioner, PLANTERS cannot be considered as the dominant feature of
the trademarks in question because it is a mere descriptive term, an ordinary word
which is defined in Webster International Dictionary as one who or that which plants or
sows, a farmer or an agriculturist.” The Supreme Court found this argument without
merit. While it is true that PLANTERS is an ordinary word, nevertheless it is used in the
labels not to describe the nature of the product, but to project the source or origin of the
salted peanuts contained in the cans. The word PLANTERS printed across the upper
portion of the label in bold letters easily attracts and catches the eye of the ordinary
consumer and it is that word and none other that sticks in his mind when he thinks of
salted peanuts